Enforcement of modified European patents

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The Romanian courts have recently been confronted with an issue that has not been previously been brought before them. The issue relates to the enforcement of a European patent which has been modified during opposition proceedings.

One of the most successful products commercialised by pharmaceutical company F. Hoffmann La Roche is the osteoporosis medicine marketed under the trademark Bonviva. Two European patents covered this product. The first one (covering the active substance: ibandronic acid) expired in June 2011 while the second patent (covering a certain dosage and administration method) has an expiration date of May 2023.

Eight generics companies filed oppositions against the granting of the second patent. During the opposition proceedings the owner of the patent decided not to defend the version of the patent initially granted by the European Patent Office (EPO) and filed a new set of claims (five claims instead of the initial eight). A further amendment of this new set of claims was performed during the proceedings, with the last version having only four claims.

Considering this new set of claims, the opposition division decided to reject the opposition and upheld the patent in its new, four-claim, form. The decision was promptly appealed by five of the eight opponents. The appeal is currently pending before the EPO.